A Cup Is at the Heart of a Trademark Dispute

First came the tattoo, etched across the knuckles of Sam Penix’s right fist in 2009. It said “I [coffee cup] N Y,” the bold red cup leaping out from the black letters.

Then came the logo — a cartoon of Mr. Penix’s tattooed fist grasping a coffee-filled portafilter, punching through the name of the East Village coffee shop Mr. Penix co-owned, Everyman Espresso. It said everything Mr. Penix meant for the shop to stand for: an in-your-face passion for New York City and for fine coffee.

Then, last month, came the letter from agents for the state’s Department of Economic Development.

It said, “Everyman Espresso’s unauthorized and confusingly similar use of the I ♥ NY® logo” violated federal trademark law and implied “a misleading designation of source, origin, endorsement, sponsorship or approval by the New York State Department of Economic Development of your merchandise.”

Stop the French presses.

Down came the logo from Everyman’s Web site. Down to the basement went the mugs and T-shirts and onesies emblazoned with it. Out went the letter from Everyman’s lawyer, promising, “My client shall cease all use of its mark.”

Mr. Penix and his partner Jay Terrana hoped that would be enough. It was not.

Back came the reply from a lawyer for CMG Worldwide, the agency that is kept very busy protecting the trademark of the state’s iconic, oft-ripped-off “I ♥ NY” mark.

“We expect that any entity that infringes on the rights of our client compensate it for unauthorized use,” the lawyer, Clare Neumann, wrote on May 20, requesting “an accounting of all gross revenues generated during the period when the I ♥ NY® Trademark was used” to help her set the appropriate penalty.

That, in coffee parlance, has left a bitter taste in Mr. Penix’s mouth.

“Basically, it’s extortion,” he said. “It’s also ironic because we are being threatened by the entity that has vowed to grow our New York business.”

The mission of Empire State Development, the department’s parent agency, is indeed “to promote a vigorous and growing economy, encourage the creation of new job and economic opportunities, increase revenues to the State and its municipalities, and achieve stable and diversified local economies.” Empire State Development is also home to the state tourism department, which started an effort last year to revive and reinvent its “I ♥ NY” campaign.

On Monday, Everyman slapped a “Censored” sign over the logo on the door of its second shop, on West Broadway in SoHo, which opened last summer. Everyman’s principals are complying with Ms. Neumann’s request, albeit under protest. “We just think there’s no likelihood of confusion,” Mr. Terrana said.

Ms. Neumann’s response is, essentially, that the law — specifically, section 43(a) of the Lanham Act, 15 USC 1125(a) — is the law. Nor does the fact that the red coffee cup does not much resemble the red heart of the I ♥ NY logo make much difference. Federal regulations, she said, “prohibit companies from using any part of a trademark.”

In the 36 years since the designer Milton Glaser came up with the logo to help boost New York’s sagging mid-’70s image, the state has filed thousands of trademark objections and cease-and-desist letters. Last year alone, a state official said, more than 100 letters were sent.

Many go to vendors who use the whole logo without permission. But the state has also gone after the makers of “I ♥ Yoga” T-shirts and “I ♥ Paris” bumper stickers. After Sept. 11, when Mr. Glaser designed an “I ♥ NY More Than Ever” logo with a smudge on the heart, the state even threatened to (but did not) sue him, Mr. Glaser said.

But Everyman has another option, Ms. Neumann wrote. It can submit a proposal to buy licensing rights, an arrangement that state officials said brought in more than $2.5 million last year.

No thanks, said Mr. Terrana. “It would just make more sense for us to change our mark than pay on an ongoing basis to use theirs,” he said. “That’s setting aside the fact that we don’t think we’re infringing on it anyway.”

Mr. Penix’s tattoo itself is safe — as long as he doesn’t misuse it.

“I just have to keep it separate from the promotion of the business and put it away for photos,” he wrote. “No more fan photos of the fist.”